Appeal No. 2003-0907
Application No. 09/337,278
Miyashita. It is well settled that the burden of establishing the practical significance
of data in the record with respect to unexpected results rests with the Appellants,
which burden is not carried by mere arguments of counsel. See generally In re
Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997); In re
Merck & Co., 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir. 1986); In re
Longi, 759 F.2d 887, 897, 225 USPQ 645, 651-52 (Fed. Cir. 1985); In re Klosak,
455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972). Thus, Appellants have not
carried the burden of explaining the practical significance of the results with respect
to the invention of Miyashita, vis-a-vis properties to be expected with a different
compound to adjust the resistivity. Moreover, the declaration only provides tests on
one type of wafer. However, the claims are open to cleaning a wide variety of
devices. Thus, we find that the evidence presented in the declaration is not
commensurate in scope with the range of compositions encompassed by the
appealed claims. See In re Clemens, 622 F.2d 1029, 1035-36, 206 USPQ 289,
295-96 (CCPA 1980).
The Examiner’s rejection of claims 1 and 5 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Miyashita and Kanno is affirmed. We also
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